Ex Parte DeBaun

Patent Trial and Appeal Board

Apr 23, 2018

13709875 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131709,875 12/10/2012
49840 7590 04/25/2018
Atlanta Baker Donelson
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Rd.
A1LANTA, GA 30326
FIRST NAMED INVENTOR
Daniel T. DeBaun
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2924496-1 2899
EXAMINER
ORTMAN JR., KEVIN C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
04/25/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
atlip@bakerdonelson.com
tdavis@bdbc.com
ipdocketing@bakerdonelson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL T. DEBAUN
Appeal2017-007827
Application 13/709,875
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-25 of Application 13/709,875
under 35 U.S.C. § 103(a) as obvious. Final Act. 2-10 (mailed August 5,
2016). Appellant 1 seeks reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Daniel T. Debaun is identified as the real party in interest. Br. 2.
Appeal2017-007827
Application 13/709,875
BACKGROUND
The '87 5 Application describes shields for protecting a person from
harmful thermal and electromagnetic radiation produced by electronic
devices. Spec. 1. Claims 1-3 are representative of the '875 Application's
claims and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A body shield for shielding a person from thermal and
electromagnetic radiation from portable electronic devices, the
body shield comprising,
a core including a first layer having a material composition
for shielding extremely low frequency electromagnetic radiation,
a second layer having a material composition for absorbing
higher frequency electromagnetic radiation, and a third layer
having a material composition for reflecting higher frequency
electromagnetic radiation, and
an outer casing encasing said core, said outer casing having a
generally thermal resistant material top layer overlaying said
core and a generally thermal resistant material bottom layer
underlying said core.
2. The body shield of claim 1 wherein said outer casing top
layer is softer than said outer casing bottom layer.
3. The body shield of claim 1 wherein said outer casing
bottom layer is stiff er than said outer casing top layer.
Br. 25 (Claims App.).
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Application 13/709,875
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Katz, 2 Romanko, 3 and
Steelmon, 4 as evidenced by Trenkler5 and Ni. 6 Final Act. 3;
Answer 2.
DISCUSSION
Rejection 1. Appellant makes separate arguments for reversal of this
rejection with respect to three groups of claims: (1) claims 1and12,7 Br. 5-
21; (2) claims 2 and 14, id. at 22, 23; and (3) claims 3 and 15. Id. With
respect to the independent claims, we select claim 1 as representative. We
further select claims 2 and 3 as representative of the dependent claims. We
address Appellant's arguments regarding each group of claims in tum.
Claim 1. Appellant argues that the rejection of claim 1 as
unpatentable over the combination of Katz, Romanko, and Steelmon should
be reversed because: ( 1) Katz and Romanko fail to describe the frequency
2 US 5,336,848, issued Aug. 9, 1994.
3 US 2010/0300744 Al, published Dec. 2, 2010.
4 US 4,980,564, issued Dec. 25, 1990.
5 US 4,890,083, issued Dec. 26, 1989.
6 Ni et al., Electromagnetic Shielding Property of CFRP Composite
Laminates I--4 (18th Int'l Conf. on Composite Materials) (2011).
7 Although Appellant provides separate arguments in the Brief for each
independent claim, the arguments urging reversal of claim 1 are substantially
similar to the arguments for reversal of claim 12. Compare Br. 5-13 with
Br. 13-21.
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Application 13/709,875
ranges shielded or absorbed by individual layers, Br. 5-7; (2) Steelmon's
absorption radiation wavelengths for laser-produced electromagnetic
radiation are outside the range for extremely low frequency electromagnetic
radiation, e.g., 0-300 Hz range, for the first layer and higher frequency
electromagnetic radiation, e.g., 800 Hz-10 Ghz, for the remaining two
layers, id. at 7-9; (3) the Examiner "cannot simply identify a metal and
assume that it has the claim recited qualities," nor cite Ni and Trenkler for
showing carbon fiber and nickel use, id. at 9; (4) the Examiner has merely
provided a laundry list of components to provide a proposed combination
from five references, id. at 9-10; and (5) "it is only through ... hindsight
that [Appellant's] invention of a three layered core with specific frequency
shielding capabilities can be glea[ n Jed from the cited references." Id. at 13.
Appellant's arguments are not persuasive.
First, we are not persuaded by arguments (1) and (2) because the bulk
of Appellant's arguments are directed to attacking the individual secondary
references rather than the combined teaching of the references when read
together. In this case, Appellant has not identified any particular claim
limitation that is neither described nor suggested in the cited references.
Appellant's criticisms of the individual references, therefore, do not
establish nonobviousness. See In re Keller, 642 F.2d 413 (CCPA 1981); In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.").
The combined teachings of Katz, Romanko, and Steelmon describe or
suggest the claim limitations at issue. There is no dispute that Katz's
electromagnetic radiation shield 8 does not teach the claimed first, second,
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Application 13/709,875
and third layers, nor each layer's requisite properties. Answer 3--4; Br. 5. In
rejecting claim 1, the Examiner relies upon Romanko and Steelmon for
teaching such layers and their shielding/absorbing of low and high frequency
electromagnetic radiation. Answer 2-7, 11-14.
The Examiner found that Katz, in combination with Romanko,
describes a shielding arrangement in which a carbon fiber reinforced
polymer layer is located between two aluminum conductive layers. Id. at 11.
The Examiner further found that Steelmon teaches: (i) an external iron
coating material that shields radiation and (ii) an inner aluminum layer that
reflects radiation. Id. at 12. The Examiner determined that "Steelmon
provides motivation for modifying one of the conductive layers of Romanko
to be made of iron, whereas the opposite conductive layer is to remain
aluminum." Id.
Steelmon explicitly discloses that "a compound or group of elements
[or] compounds may be selected to be highly absorptive for ... a particular
range of wavelength." Steelmon 3:11-14; see also 2:65---67; Answer 14.
Thus, we agree with the Examiner that Steelmon's teachings are not limited
to absorption radiation wavelengths for laser-produced electromagnetic
radiation. Answer 14. Rather, Steelmon's teachings are applicable to
controlling the exposure to radiation wavelengths that would have been
expected to be encountered by the ordinary skilled artisan. Id. at 14--15; see
In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) ("It is well settled that a
prior art reference is relevant for all that it teaches to those of ordinary skill
in the art.").
Second, Appellant argues in connection with argument (3) that the
claimed subject matter achieves its effectiveness through the materials
selected and the thicknesses thereof. Br. 9. The limitations of claim 1,
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Application 13/709,875
however, are silent with respect to any thicknesses of the selected materials.
See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("Many of appellant's
arguments fail from the outset because, ... they are not based on limitations
appearing in the claims.").
The Examiner, furthermore, does not rely on Ni and Trenkler merely
for showing carbon fiber and nickel use. Answer 12-13.
As explained by the Examiner, Ni provides evidence that the carbon
fiber reinforced middle layer of Katz's electromagnetic radiation shield 8, as
modified by Romanko, would have been expected to provide absorption
against higher frequency electromagnetic radiation at wavelengths that
overlap an 800 Hz-10 Ghz frequency range. Id. at 13; see claim 12.
Likewise, Trenkler provides evidentiary support that Romanko 's aluminum
conductive layer would have provided shielding against higher frequency
electromagnetic radiation, e.g., above 10 KHz. Answer 12-13; see claim 12.
The Examiner further explained that Trenkler provides evidence that
Romanko's iron conductive layer, as modified by Steelmon, would have
provided shielding against extremely low frequency electromagnetic
radiation from 0 Hz up to about 10 KHz. Answer 12-13; see claim 12.
Therefore, we agree with the Examiner that "the materials of [Katz's
modified] core (i.e.[,] iron layer, carbon fiber reinforced polymer layer, and
aluminum layer) and their functional effects as claimed by Appellant were
known at the time of invention and have been presented ... in view of the
record of prior art." Answer 14. The applied prior art teaches that these
materials may be selected to shield, absorb, or reflect particular wavelength
ranges of electromagnetic radiation-a person of ordinary skill in the art at
the time of the invention would have reasonably inferred that the prior art
materials would have possessed the requisite properties. See id. at 6. It has
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Application 13/709,875
been established that "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d at 1264--65 (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom).
Because the Examiner's findings that the materials of Katz's modified
core would have had the claimed properties are reasonable, the burden is on
Appellant to provide evidence or reasoning sufficient to rebut the findings.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical, processes the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of ... [the] claimed product."). In this instance,
however, Appellant has not provided any evidence or reasoning that would
support a conclusion that the materials of Katz's modified core would not
have possessed the functional effects recited in claim 1.
Third, contrary to Appellant's argument (4), we find nothing about
Examiner's combination of numerous references that detracts from the
obviousness of claim 1. The number of references cited by the Examiner
does not negate the obviousness of the combination when the prior art uses
the various elements for the same purposes as they are used by Appellant,
making the claimed invention as a whole obvious. In re Gorman, 933 F .2d
982, 987 (Fed. Cir. 1991). The obviousness criterion is not based on the
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Application 13/709,875
number of references, but what the references would have described or
suggested to a person of ordinary skill in the art in the field of invention. Id.
Fourth, Appellant's argument (5) asserts that the Examiner
improperly supported the rejection with the use of hindsight. Br. 13. The
Examiner explained why a person of ordinary skill in the art would have
combined Katz, Romanko, and Steelmon. Answer 6. These explanations do
not rely upon hindsight, and Appellant has not demonstrated error in these
findings.
Thus, when we consider all of the evidence, we determine that the
preponderance of the evidence supports the Examiner's conclusion of
obviousness for claim 1.
Claims 2 and 3. The Examiner found that Katz does not explicitly
teach that: (i) the outer casing top layer is softer than the outer casing
bottom layer, or (ii) the outer casing bottom layer is stiffer than the outer
casing top layer. Answer 7. The Examiner, however, found Katz teaches
that tray 6 "may be made into firm or bendable models depending on the
requirements." Id. (citing Katz 2:23-28). The Examiner determined that
it would have been obvious to one skilled in the art to modify the
shield of modified Katz to have a casing with top layer softer
than the bottom layer or the bottom layer to be stiffer than the top
layer, using only routine experimentation, depending on the end-
use requirements of the tray shield.
Answer 7-8 (citing Katz 2:23-28).
Appellant argues that the claimed "differences in hardness" between
layers "provides a critical advantage." Br. 22. Appellant further argues that
"[h ]aving the bottom layer [harder/stiffer] than the top layer allows the
bottom layer to provide a support for the portable electronic device while
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Application 13/709,875
simultaneously allowing the top layer which contacts the device to be soft to
provide additional cushioning and gripping of the device." Id.
Appellant's arguments are not persuasive because "'arguments of
counsel cannot take the place of evidence lacking in the record."' Estee
Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
We agree with the Examiner that Appellant has not provided
sufficient evidence showing criticality with respect to the softness/stiffness
of the upper and lower casing layers as claimed. See Answer 17. Thus,
when we consider all of the evidence, we determine that the preponderance
of the evidence supports the Examiner's conclusion of obviousness for
claims 2 and 3 .
For the reasons set forth above and in the Answer, we are not
persuaded by any of Appellant's arguments for reversal of the obviousness
rejection of claims 1-25. 37 C.F.R. § 41.37(a)(l)(iv).
We, therefore, affirm Rejection 1.
DECISION
For the reasons set forth above, we affirm the§ 103(a) rejection of
claims 1-25 of the '87 5 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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